The opinion
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8 United States District Court
9 Central District of California
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11 LATHER, INC., Case No. 2:19-cv-05868-ODW (SSx)
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Plaintiff,
13 ORDER GRANTING
v. DEFENDANT’S MOTION TO
14 TRANSFER [17]
15 GILCHRIST & SOAMES, INC.;
CELEBRITY CRUISES INC.,
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Defendants.
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18 I. INTRODUCTION
19 Presently before the Court is Defendant Celebrity Cruises Inc.’s Motion to
20 Transfer venue to the Southern District of Florida (“Motion”). (Mot. to Transfer
21 (“Mot.”), ECF No. 17.) For the following reasons, the Court GRANTS Defendant’s
22 Motion.1
23 II. BACKGROUND
24 Lather, Inc. (“Lather”) is a California corporation with its principal place of
25 business in Pasadena, California. (Compl. ¶ 3, ECF No. 1.) Lather is a manufacturer
26 and distributor of skin and hair products. (Compl. ¶ 8.) It owns an incontestable
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28 1 After carefully considering the papers filed in connection with the Motion, the Court deemed the
matter appropriate for decision without oral argument. Fed. R. Civ. P. 78; C.D. Cal. L.R. 7-15.
1 trademark registration for the trademark LATHER (the “Mark”), for use on hair and
2 body products like soap, body wash, and shampoo. (Compl. ¶¶ 10–11.)
3 Celebrity Cruises, Inc. (“Celebrity”) is a luxury cruise line, incorporated in
4 Florida with its principal place of business in Miami, Florida. (Mot. 1; Compl. ¶¶ 1,
5 5.) Lather alleges Gilchrist & Soames, Inc. (“Gilchrist”) is a Delaware corporation
6 with its principal place of business in Indiana. (Compl. ¶ 4.) Gilchrist notes that
7 Indiana was its previous place of business and that its principal place of business is
8 currently New Jersey. (Gilchrist Answer ¶ 4, ECF No. 29.) Gilchrist sells various
9 skin and hair products and provided the allegedly infringing products at issue in this
10 action to Celebrity. (Compl. ¶ 13; Gilchrist Answer ¶¶ 13–14; Celebrity Answer ¶ 14,
11 ECF No. 11.)
12 Lather initiated this action against Celebrity and Gilchrist in the Central District
13 of California, alleging that Celebrity and Gilchrist infringed upon Lather’s trademark
14 rights in the Mark. (See Compl. ¶ 1.) Specifically, Lather claims that Gilchrist used
15 an identical mark on its skin and hair products, and supplied such products to
16 Celebrity, which, in turn, provided the allegedly infringing products to Celebrity’s
17 cruise line customers. (Compl. ¶¶ 13–14.)
18 Lather further alleges that Gilchrist and Celebrity were aware of Lather’s rights
19 in the Mark because it pitched its hair and skin products to Celebrity using the Mark
20 as early as 2014. (Compl. ¶¶ 15–16.) Lather also discovered that Gilchrist was using
21 the Mark in 2005 on a hair product it sold to various third-party establishments.
22 (Compl. ¶ 16.) In response to Lather’s cease and desist demands, Gilchrist agreed, in
23 writing, to stop selling products with the Mark on them as soon as it exhausted its
24 limited inventory of products. (Compl. ¶ 16.)
25 Celebrity moves to transfer the case to Florida under 28 U.S.C. § 1404(a),
26 contending that the Central District of California is an inconvenient location for this
27 trademark lawsuit because many of the witnesses and the majority of documents
28 pertinent to the case are located in Miami. (Mot. 1–3.) Additionally, Celebrity argues
1 that a substantial part of the relevant events giving rise to this case occurred in Florida.
2 (Mot. 2–3.) Lather opposes the motion to transfer, arguing that Celebrity has not met
3 its burden of demonstrating that the Southern District of Florida is a more convenient
4 forum. (Opp’n to Mot. (“Opp’n”) 2, ECF No. 23.)
5 III. LEGAL STANDARD
6 A district court may transfer an action to any district or division where the
7 action might have originally been brought to promote the convenience of the parties
8 and witnesses and the interest of justice. 28 U.S.C. § 1404(a). Section 1404(a) “gives
9 a district court broad discretion to transfer a case to another district where venue is
10 also proper.” Amini Innovation Corp. v. JS Imps., Inc., 497 F. Supp. 2d 1093, 1108
11 (C.D. Cal. 2007); see also Commodity Futures Trading Comm’n v. Savage, 611 F.2d
12 270, 279 (9th Cir. 1979) (“Weighing of the factors for and against transfer involves
13 subtle considerations and is best left to the discretion of the trial judge.”).
14 IV. DISCUSSION
15 To transfer this case to the Southern District of Florida, the Court must find:
16 1) the transferee court is one where the action might have been brought, and 2) the
17 parties’ and witnesses’ convenience, as well as the interest of justice, favor transfer.
18 Hatch v. Reliance Ins. Co., 758 F.2d 409, 414 (9th Cir. 1985); Metz v. U.S. Life Ins.
19 Co., 674 F. Supp. 2d 1141, 1145 (C.D. Cal. 2009).
20 A. THE TRANSFEREE COURT IS ONE WHERE THE ACTION “MIGHT HAVE BEEN
21 BROUGHT”
22 Here, there is no dispute that the transferee court is one where the action might
23 have been brought. In its Complaint, Lather alleges causes of action for federal
24 trademark infringement, false designation of origin, and unfair competition. (See
25 Compl.) Lather’s trademark infringement claims arise under federal law, and the
26 remaining claims are a part of the same case or controversy. See 28 U.S.C. §§ 1331,
27 1367. Therefore, subject matter jurisdiction exists. Moreover, the Southern District
28 of Florida has general personal jurisdiction over Celebrity because Celebrity is a
1 Florida corporation with its principal place of business is in Miami, Florida. See
2 Daimler AG v. Bauman, 571 U.S. 117, 137 (1990); (see also Compl. ¶ 5).
3 Although Defendant Gilchrist is a Delaware corporation with its principal place
4 of business in Indiana or New Jersey, Celebrity argues that personal jurisdiction
5 nevertheless exists because Gilchrist is engaged in business in the Southern District of
6 Florida. (Mot. 5.) Lather does not oppose on this point, and Gilchrist raises no
7 objections in this regard. (See generally Opp’n; Gilchrist Answer; Joint Report, ECF
8 No. 31.) Additionally, in its Answer, Gilchrist acknowledges that it sold the allegedly
9 infringing products to Celebrity, located in Florida, further supporting the existence of
10 personal jurisdiction in Florida. (Answer ¶¶ 13–14.)
11 Lastly, venue is proper in the Southern District of Florida because the parties
12 assert that a substantial portion of the events giving rise to this claim occurred there.
13 (Mot. 5; Decl. of Robert Hoyt (“Hoyt Decl.”) ¶ 7, ECF No. 23-1; Compl. ¶ 14.)
14 Accordingly, Lather could have brought this action in the Southern District of Florida
15 and the first prong is met.
16 B. CONVENIENCE AND INTEREST OF JUSTICE
17 As the Southern District of Florida is a proper venue, the decision to transfer
18 turns on the convenience of parties and witnesses, and the interest of justice. See
19 Young Props. Corp. v. United Equity Corp., 534 F.2d 847, 852 (9th Cir. 1976). Once
20 the Court determines that venue is proper, the movant must present strong grounds for
21 transferring the action; otherwise, the plaintiff’s choice of venue will not be disturbed.
22 Decker Coal Co. v. Commonwealth Edison Co., 805 F.2d 834, 843 (9th Cir. 1986).
23 The Ninth Circuit has noted that, in making the decision, a court may consider factors
24 such as:
25 (1) the location where the relevant agreements were negotiated and
executed, (2) the state that is most familiar with the governing law,
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(3) the plaintiff’s choice of forum, (4) the respective parties’ contacts
27 with the forum, (5) the contacts relating to the plaintiff’s cause of action
28 in the chosen forum, (6) the differences in the costs of litigation in the
two forums, (7) the availability of compulsory process to compel
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attendance of unwilling non-party witnesses, and (8) the ease of access to
2 sources of proof.
3 Jones v. GNC Franchising, Inc., 211 F.3d 495, 498–99 (9th Cir. 2000).
4 Furthermore, in a trademark infringement cases, like the one here, a plaintiff
5 must establish: (1) an ownership of a trademark right; (2) that was used by the
6 defendant; “(3) in a way that is likely to cause consumer confusion and thus infringe
7 upon the trademark right.” Adobe Sys., Inc. v. Blue Source Grp., Inc., 125 F. Supp. 3d
8 945, 966 (N.D. Cal. 2015) (citing Levi Strauss & Co. v. Blue Bell, Inc., 778 F.2d 1352,
9 1354 (9th Cir. 1985)). The likelihood of confusion is the central element of a
10 trademark infringement claim. Abercrombie & Fitch Co. v. Moose Creek, Inc., 486
11 F.3d 629, 633 (9th Cir. 2007). To determine a likelihood of confusion between
12 related goods, courts use the Sleekcraft factors; that is, (1) strength of the mark;
13 (2) proximity of the goods; (3) similarity of the marks; (4) evidence of actual
14 confusion; (5) marketing channels used; (6) type of goods and the degree of care
15 likely to be exercised by the purchaser; (7) defendant’s intent in selecting the mark;
16 and (8) likelihood of expansion of the product line. Id. (discussing AMF Inc. v.
17 Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 2003)). As trademark infringement
18 is the gravamen of Lather’s Complaint, the Court will consider relevant Sleekcraft
19 factors in its examination of parties’ and witnesses’ conveniences, as well as the
20 interest of justice.
21 1. Convenience of the Witnesses and the Availability of Compulsory
22 Process for Non-Party Witnesses
23 “The convenience of the witnesses is often the most important factor in
24 deciding whether a transfer under § 1404 is appropriate.” Allstar Mktg. Grp., LLC v.
25 Your Store Online, LLC, 666 F. Supp. 2d 1109, 1132 (C.D. Cal. 2009). In
26 determining whether this factor favors transfer, the Court must consider the location
27 and number of witnesses each side has and the relative importance of those witnesses.
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1 Fontaine v. Wash. Mut. Bank, Inc., No. CV 08-5659-PSG (Ex), 2009 WL 1202886, at
2 *3 (C.D. Cal. Apr. 30, 2009).
3 The convenience of witnesses factor also includes “a separate but related
4 concern, the availability of compulsory process to bring unwilling witnesses live
5 before the jury.” Brackett v. Hilton Hotels Corp., 619 F. Supp. 2d 820, 820 (N.D.
6 Cal. 2008). “[T]he Court’s subpoena power only extends outside of this district if the
7 place of service is ‘within 100 miles of the place specified for the deposition, hearing,
8 trial, production or inspection.’” Fontaine, 2009 WL 1202886, at *5 (citing Fed. R.
9 Civ. P. 45(b)(2)). Consequently, the Court accords greater weight to the
10 inconvenience of non-party witnesses because party witnesses can be compelled to
11 testify regardless of the forum in which the case is litigated. STX, Inc. v. Trik Stik,
12 Inc., 708 F. Supp. 1551 (N.D. Cal. 1988); Applied Elastomerics, Inc. v. Z-Man
13 Fishing Prods., Inc., No. C 06-2469 CW, 2006 WL 2868971, *4 (N.D. Cal. Oct. 6,
14 2006).
15 Here, Celebrity identifies its executive team as key witnesses who will be
16 inconvenienced by the proceeding in California. (Decl. of Dominique Taleno
17 (“Taleno Decl.”) ¶ 7, ECF No. 19.) Similarly, Lather identifies employees as key
18 witnesses who will be inconvenienced by having to testify in Florida. (Hoyt Decl.
19 ¶ 10.) At first blush, it would appear that the inconvenience to the respective
20 employee witnesses cancel each other out. However, once the relative importance of
21 the witnesses’ anticipated testimony is considered, this factor tips in favor of transfer.
22 Whereas Lather’s witnesses will testify about the use and development of its Mark
23 (which does not appear to be in dispute) and pitch meetings (that apparently occurred
24 in Florida), Celebrity’s witnesses will testify regarding the central issues in the case,
25 namely, the selection, development, adoption, and use of the allegedly infringing term
26 “lather.” (Mot. 6; Opp’n 6–7.)
27 More importantly, the relative convenience of non-party witnesses also weighs
28 in favor of transfer. STX, 708 F. Supp. at 1555. Celebrity has identified one or more
1 witnesses affiliated with a third-party, Albatros, S.A., who will be inconvenienced
2 absent transfer to the Southern District of Florida. (Taleno Decl. ¶ 9.) Albatros is the
3 current supplier of Celebrity’s onboard amenity kits, including the soap and shower
4 gel products bearing the term “lather.” (Taleno Decl. ¶ 9.) Albatros is an Italian
5 company, and its only U.S. presence is in Miami, Florida. (Mot. 7; Taleno Decl. ¶ 9.)
6 Accordingly, the witness or witnesses affiliated with Albatros will be substantially
7 inconvenienced if the case is not transferred to Florida. Furthermore, if the case
8 remains in California, Albatros’s witness(es) will likely be outside the Court’s
9 subpoena power. Fontaine, 2009 WL 1202886, at * 5. This hurdle is eliminated if
10 the action is transferred to the Southern District of Florida due to Albatros’s presence
11 in Florida. In contrast, Lather has identified no third-party witnesses who would be
12 inconvenienced by transfer to the Southern District of Florida. Consequently, this
13 factor weighs in favor of transfer.
14 2. Plaintiff’s Choice of Forum and Contacts Relating to Plaintiff’s Cause of
15 Action in the Chosen Forum
16 Lather correctly points out that, in motions to transfer venue, the plaintiff’s
17 choice of forum is typically given considerable weight. (See Opp’n 5–6.) However,
18 “where the forum lacks any significant contact with the activities alleged in the
19 complaint, [a] plaintiff’s choice of forum is given considerably less weight, even if the
20 plaintiff is a resident of the forum.” Cohen v. State Farm & Cas. Co.,
21 No. C1:09-cv-1051 AWI DLB, 2009 WL 2500729, at *3 (E.D. Cal. Aug. 14, 2009)
22 (collecting cases). In other words, “[i]f the operative facts have not occurred within
23 the forum of original selection and that forum has no particular interest in the parties
24 or the subject matter, the plaintiff’s choice is entitled only to minimal consideration.”
25 Pac. Car & Foundry Co. v. Pence, 403 F.2d 949, 954 (9th Cir. 1968).
26 In trademark cases, “a substantial part of the events giving rise to the claims
27 occur in any district where consumers are likely to be confused by the accused
28 goods,” and not where the deceptive or misleading labels are affixed to the goods.
1 Allstar Mktg. Grp., LLC, 666 F. Supp. 2d at 1128 (internal quotations marks omitted);
2 see also Sykes Lab., Inc. v. Kalvin, 610 F. Supp. 849, 860 n.8 (C.D. Cal. 1985)
3 (observing that trademark infringement occurs in the district “where the passing off
4 occurs, i.e., where the deceived customer buys the defendant’s product in the belief
5 that he is buying the plaintiff’s”).
6 Here, Lather focuses its trademark infringement claim primarily on members of
7 the public who received the infringing products from Celebrity on its cruise lines.
8 (See, e.g., Compl. ¶ 18 (“Defendants’ goods, which feature the LATHER Mark, are
9 such that prospective purchasers or consumers of the goods of Defendants and the
10 goods of Plaintiff, have been confused as to source.”).) As these allegations suggest,
11 and as Celebrity points out, the public confusion occurred primarily in Florida, as the
12 majority of ships stocked with the shower gel and soap products departed from
13 Florida. (See Mot. 11; Taleno Decl. ¶ 6 (“62% of Celebrity’s cruises departing from
14 U.S. ports from 2016 through 2019 departed from ports in the Southern District of
15 Florida.”).) Although Lather alleges that “California will also be the source of actual
16 instances of confusion,” it does not indicate that there was public confusion by
17 members of the public in California and fails to provide any specificity in that regard.
18 (Opp’n 8 (citing Hoyt Decl. ¶ 9).) Lather refers to documents located in California
19 that relate to alleged public confusion. (See Hoyt Decl. ¶ 9.) However, the location of
20 documents, which can be easily and conveniently used in electronic form in Florida,
21 would not override the inconvenience of challenging (in a California courtroom)
22 evidence of customer confusion that occurred in Florida.
23 Additionally, Lather alleges that Celebrity and Gilchrist were aware of Lather’s
24 trademark rights in the Mark and intentionally infringed upon it anyway. (See Compl.
25 ¶¶ 15, 16, 19.) However, the majority of the operative facts evidencing intent
26 occurred predominantly in Florida. In support of its allegations that Celebrity acted
27 knowingly and intentionally, Lather asserts that Celebrity was aware of Lather’s Mark
28 because, from 2012 to 2017, Lather made several pitches to Celebrity to sell its soaps
1 and shower products. (Opp’n 4.) Yet, these discussions between Celebrity and Lather
2 about a potential supplier relationship occurred at Celebrity’s offices in Miami.
3 (Taleno Decl. ¶ 12.) Celebrity’s representatives have never visited Lather’s offices in
4 California. (Taleno Decl. ¶ 12.) Further, Celebrity negotiated a supplier agreement
5 with Gilchrist in Florida, by which Gilchrist delivered all on–board amenity products,
6 including the allegedly infringing products, to Celebrity’s facility in Florida. (Taleno
7 Decl. ¶ 5.) Consequently, most of the relevant events supporting Lather’s allegation
8 that Celebrity intentionally infringed upon the Mark occurred in Florida.
9 Finally, as to Gilchrist’s intent, Lather alleges that it discovered that Gilchrist
10 was marketing and selling its goods bearing the Mark in 2005. (Compl. ¶ 16.) After
11 Lather confronted it, Gilchrist agreed to cease using the Mark and entered into an
12 agreement with Lather. (Compl. ¶ 16; Opp’n 8–9.) However, it is unclear where the
13 agreement was negotiated and executed, as Lather provides only a vague statement
14 about partial execution in California. (Opp’n 8–9 (“[Gilchrist’s] previous agreement
15 to cease its use of the LATHER mark, was negotiated and executed (at least in part) in
16 California”).) In contrast, the supply agreement between Gilchrist and Celebrity
17 regarding the allegedly infringing product was clearly negotiated and entered into in
18 the Southern District of Florida. (Taleno Decl. ¶ 5.) Therefore, most of the events
19 relevant to proving Gilchrist’s intent occurred in Florida.
20 Accordingly, because most of the relevant facts in this case occurred in Florida,
21 this factor weighs in favor of transfer.
22 3. Ease of Access to Evidence
23 The Court notes that this factor is not a predominant concern in deciding venue
24 as “advances in technology have made it easy for documents to be transferred to
25 different locations.” Metz, 674 F. Supp. 2d at 1149. Here, Lather alleges that
26 documents relating to adoption, registration, and use of the Mark are in California.
27 (Opp’n 5.) However, most of the evidence of the alleged infringement will be derived
28 from Celebrity’s corporate records. For instance, all of Celebrity’s documents
1 regarding the selection, development, and use of the accused products are located in
2 Florida. (Mot. 6.) As such, much of the documentary evidence in this case—to the
3 extent that such evidence may not be available in electronic format—is likely located
4 at Celebrity’s headquarters in the Southern District of Florida. Thus, the Court finds
5 this factor slightly favors transferring the action to the Southern District of Florida.
6 4. The Respective Parties’ Contacts with the Forum
7 In evaluating a motion to transfer, a court may also consider “the respective
8 parties’ contacts with the forum.” Jones, 211 F.3d at 498. Here, as noted, Lather is a
9 California corporation, whereas Celebrity is a Florida corporation with its principal
10 place of business in Florida. (See Compl. ¶¶ 3, 5.) Celebrity asserts that it has very
11 limited contacts with California. (Taleno Decl. ¶ 10.) Celebrity argues it has no
12 physical offices in California, and that only 2% of its cruise ships depart from
13 California versus 62% departing from Florida. (Mot. 11.) Conversely, Lather argues
14 that it has no contacts with Florida as it operates out of California. (Hoyt Decl. ¶¶ 5,
15 12.) Celebrity, however, points out that Lather supplies bath and body products to at
16 least one hotel in Palm Beach, Florida, and sells its products nationwide through the
17 Amazon website. (Reply 4.) Based on the evidence presented, the Court finds that
18 both parties have substantial contacts with the respective forums, rendering this factor
19 neutral.
20 5. The Remaining Factors Are Not Determinative
21 While the majority of the factors examined above weigh in favor of transfer, the
22 remaining factors typically considered by courts in a motion to transfer are neutral or
23 of little weight. For example, the Central District of California and the Southern
24 District of Florida are equally versed in federal trademark infringement law.
25 Consequently, the factor considering a state’s familiarity with the governing law is
26 neutral and immaterial.
27 With regard to the cost of litigation, Celebrity argues that absent transfer to the
28 Southern District of Florida, it will overwhelmingly bear the costs of litigation;
1 whereas Lather argues that a transfer would disproportionally shift the costs of
2 litigation to Lather. (See Mot. 10; Opp’n 13.) Lather also argues that Celebrity is
3 better equipped to absorb the cost of litigation because Celebrity is a larger
4 corporation with greater resources. (Opp’n 12–13.) Although the Court may consider
5 relative financial ability of the parties, it is accorded little weight. Brackett, 619 F.
6 Supp. 2d at 820. Accordingly, the Court concludes that this factor does not carry
7 sufficient weight to avoid a transfer.
8 Furthermore, courts are “not restricted to mechanically counting the factors”
9 when deciding motions to transfer. See Ancora Techs. v. Toshiba Am. Info. Sys.,
10 No. SACV 08-0626 AG (MLGx), 2009 WL 10670590, at *4 (C.D. Cal. Feb. 27,
11 2009) (citing Jones, 211 F.3d at 498). Instead, courts may look at convenience and
12 the interest of justice more holistically. Id. Applying a holistic view on the present
13 record, Florida is a more appropriate venue than California, as the significant events at
14 the core of Lather’s Complaint, including customer confusion regarding the accused
15 goods, occurred in Florida.
16 Thus, after an examination of the nature of Lather’s contentions and a careful
17 weighing of the relevant factors, the Court finds that the requested transfer will
18 promote the convenience of the parties and witnesses and the interest of justice.
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1 IV. CONCLUSION
2 For the reasons discussed above, the Court GRANTS Celebrity’s Motion to
3 || Transfer Venue. (ECF No. 17.) The Clerk of the Court shall transfer this case to the
United States District Court for the Southern District of Florida, 400 North Miami
5 || Avenue, Miami, FL 33128.
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4 IT IS SO ORDERED.
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9 March 9, 2020
10 | LS 4
Géedliod
12 OTIS D. WRIGHT, II
3 UNITED STATES DISTRICT JUDGE
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